Archive for the 'Brand Protection' Category

The recent case of Pret A Manger Limited v. Jack Tang; D2018-2059 (concerning the domain name “pret.app”) highlighted the importance of credibility under the Uniform Domain Name Dispute Resolution Policy (UDRP). Whilst the courts are better equipped to evaluate the Parties’ credibility in a dispute, much can be ascertained from the Parties’ submissions as regards their background, intentions and motive.

In the above case, the Complainant was the international sandwich shop commonly referred to as “Pret” which operates over 500 stores world-wide. The Complainant holds approximately 480 trademarks which incorporate the term PRET and in December 2017 the Complainant launched an app for smartphones and tablets in the United States of America (“United States”).

The Respondent referred to himself as an “Internet entrepreneur”, who claimed that he registered the domain name to launch a French website to help students in France find work opportunities.

As the burden of proof rests with the Complaining party, they have considerable control over how the Respondent will be perceived in a UDRP dispute. He has the task of demonstrating to a panel that the Respondent possesses the prototypical characteristics found in a “Cybersquatter”, namely, that his intentions were to take unfair advantage of Complainant’s trademark, and the driving force behind such actions was financial or otherwise.

Against a defaulting Respondent, the effects can be damaging, leading to the loss of his domain name and the label of “Cybersquatter”. In the event the Respondent decides to defend himself, he has the task of vindicating his name, demonstrating to the Panel that the Complainant’s allegations are false/ misplaced, or that he, in fact, does have a right or legitimate interest in the disputed domain name.

The Panel then has to decide the case on the merits of both Parties arguments and which presentation of the facts it believes to be more credible.

In cases where the evidence against the Respondent is overwhelming, it would be difficult for a Respondent to defend against the Complainant’s arguments (in these cases it is less likely a Respondent would submit a response), but where the facts are less clear, credibility can play a vital role in determining legitimate interest and bad faith. In such cases, the UDRP becomes a balancing act, whereby inferences can be drawn which tip the scale in favour of one of the Parties.

The Panel in Pret had such a decision to make. Even after the submission of both arguments the case was finely balanced. The Panel then directed its attention to the Respondent, stating:

“Much therefore hinges on the general credibility of the Respondent.”

In other words, the Panel had to decide whether the Complainant had done enough to establish the Respondent as a “Cybersquatter”, or is the image portrayed by the Respondent to be believed?

The Panel examined the various articles produced by the Respondent which showed his entrepreneurial acumen in previous ventures and found:

“Taken together, these various articles appear to project the image the Respondent has claimed, namely of an Internet entrepreneur who has launched a successful student job search website, followed by a successful visiting massage website, both of which have been profitable and, in the latter instance, has raised millions of Euros in venture capital.

The Respondent now seeks to repeat the success of the student job search venture, or similar, but in France, and with an app for the purpose. The credibility of his choice of France is supported by his demonstrated business presence in France through Urban Massage France SARL, of which he is a director.

On the totality of the evidence, and on balance, the Panel finds no reason to doubt the credibility of the Respondent or to doubt his explanation of the registration of the disputed domain name as having been for the purpose of an app for his French student job search venture.”

It is no coincidence that a finding of legitimate interest on the part of the Respondent often translates to a Panel finding no evidence of bad faith registration or/and use. This is because Complainant’s insufficient evidence leaves a significant lacuna where the benefit of the doubt tends to favour Respondent. This is true even in cases where a higher standard exists for high volume registrants. For example, a search conducted on the website www.udrpsearch.com reveals that the online media company, Name Administration (BVI) have been involved in upwards of 50 domain disputes, with success in all but one.

These numbers demonstrate that high volume registrant + high volume disputes do not automatically mean that the Respondent is bound to lose its domain name in all cases. In fact, Respondent’s such as Name Administration (along with carefully selected legal representation), have made the most out of their unfortunate circumstances to build up a level of credibility in UDRP cases. The numerous cases filed against Name Administration have led to it becoming well-known among UDRP panels who have come to accept the company’s legitimate business structure.

Credibility in UDRP disputes can also work the other way, with a Complainant’s credibility being called into question when confronted with a request for Reverse Domain Name Hijacking (RDNH).

Factors which can affect a Complainant’s credibility in UDRP disputes include:

Providing misleading or incomplete information to the Panel (see; Tupelo Honey Hospitality Corporation v. Ritchie Taylor; Claim No. FA1705001732247), finding “The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent registered the disputed domain name in bad faith.”)

Utilizing counsel who ‘should know better’ (see; Pet Life LLC v. ROBERT RIESS / blue streak marketing llc; Claim Number: FA1810001810870, finding; “Given PET LIFE’s trademark registration date and first use in commerce date being years after Respondent’s registration of <petlife.com>, Complainant –who is represented by competent counsel– knew or should have known at the time it filed the instant complaint that it would be unable to prove each of the three elements of Policy ¶ 4(a) necessary to prevail.”)

The manner and motive in which a complaint is filed i.e. following a failed acquisition (see; Bernina International AG v. Domain Administration (BVI) Case No. D2016-1811, finding; “In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the disputed domain name. This stratagem has been described in several earlier UDRP cases as “a highly improper purpose” and it has contributed to findings of RDNH”).

A trademark owner who is considering filing a UDRP complaint should not dismiss the role of credibility in its case. Trademark owners should file complaints confident that they have provided enough evidence to satisfy their burden. For example, although the second element only requires a Complainant to make out a prima facie case, more time should be spent on trying to anticipate the Respondent’s reply to ensure there are no surprises. The use of a pre-action enforcement notice to the registrant not only allows for possible resolution but also an insight into the merits of a registrant’s possible arguments.

Copyright is known to protect original works such as literary, dramatic, musical, artistic and other intellectual works. When a person creates original work, it is automatically copyrighted at the time of its creation. Copyright gives one an exclusive right to do or authorise another person to use, reproduce and distribute copies, perform or communicate in public, certain kinds of creative works. Copyright lasts, on average, 50 years after the death of its author for most creative works.

For a work to enjoy copyright protection, the creation must be both original and tangible. A simple idea in someone’s mind is not sufficient to give protection under copyright, as the idea must be expressed in a physical form.

In contrast, trademark is a mark, when used in trade, capable of being represented graphically, and which distinguishes the goods and services of one person from that of another. The coverage of a trademark is broader than copyright, as a name, symbol, word, sign, shape of a product, colour, sound or smell can be protected under trademark law.

The main requirement for a mark to be protected is to be distinctive and not generic in relation to the business for which it is used.

However, the question here is to know if brand logos can be protected under copyright or trademark. Logos are a complex matter, and the simple answer is that they can be protected both under trademark and copyright law.

In order for a logo to have copyright protection, it requires a sufficient level of creativity. As copyright cannot protect words, colours or simple logo designs, most simple logos do not have the required level of creativity and originality to be copyrightable.
Nevertheless, some artistic logos can qualify for copyright protection if it is considered as a piece of artwork, and separate from its use as a corporate identifier. In such cases, those logos can and are enforced using both trademark and copyright.

As an example, in the United States, the Digital Millennium Copyright Act (“DMCA”) gives the opportunity for copyright holders to enforce their right and send notices to remove any content containing copyrighted works from websites or social media pages. However, as there may be some confusion between copyright and trademark protection for logos, companies must be careful when relying on the provisions of the DMCA.

In the case CrossFit, Inc. v. Alvies, No. 13-3771, 2014 WL 251760 (N.D. Cal. Jan. 22, 2014), the Defendant, Jenni Alvies, launched a blog and created a Facebook page called “CrossFit Mamas”, where she posted exercise routines. The fact that Alvies used the term “CrossFit” came to the attention of the company CrossFit Inc. In order to stop Alvies using this name, the company sent a takedown notice to Facebook pursuant to the DMCA, requesting a takedown of her Facebook page. Later, CrossFit Inc. sued Alvies for trademark infringement, but Alvies counterclaimed, arguing that the company violated paragraph 512(f) of the DMCA. This provision provides that:

“Any person who knowingly materially misrepresents under [17 U.S.C. § 512] that material or activity is infringing (…) shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer (…) who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing.”

In other words, this section held that any person who sends a notice of claimed infringement with knowledge that such claims are false might be liable for damages. In the CrossFit case, the company sent the DMCA takedown notice asserting infringement of its trademark rights rather than its copyright. The Court held that Alvies suffered damage when the content was removed via an improper DMCA takedown notice and agreed that such notice, used for a trademark matter, may violate paragraph 512(f).

The conclusion here is that a DMCA takedown notice, whether used for shutting down websites or social media pages, should be used carefully and only to address copyright violations. As many logos do not have the level of creativity required to be copyrightable, brand owners cannot rely on the DMCA provisions if a person only uses a company’s name logo without authorisation.

The use of a company’s logo by a third party, however, gives legal protection under trademark law and brand owners can enforce those trademark rights. Social media platforms, such as Facebook, also have specific procedures to report trademark infringements. Ideally, the best strategy for companies is to seek protection of their unique brand logos under both laws and obtain trademark rights as well as copyrights.

Unlike a lot of arbitration policies, Chinese extensions such as ‘.CN’ restrict complaints that involve domain names which have been in existence for longer than two years. The legal framework which applies this principle is laid out in Article 2 of the CNNIC Domain Name Dispute Resolution Policy. Specifically:

‘The policy is applicable to disputes result from registration or usage of domain names. The disputed names shall, within the range of “.CN”, “.中国” domain names that were under the administration of China Internet Network Information Center (CNNIC). However, the Dispute Resolution Service Providers do not accept the Complaint regarding domain names with registration term of over TWO years.’

The foundation of the two-year time bar derives from Chinese civil actions, specifically the General Civil Law Rules of the People’s Republic of China, which before March 2017, adopted a two-year time bar for civil actions. This principle was subsequently amended after March 2017, to increase the two-year time bar to three years. The recent changes under the civil code have also prompted consideration of the time bar in domain disputes, although nothing is set in stone so far. While some might welcome the slight increase of the time bar, removal of the limitation altogether would perhaps be more in tune with other similar policies, such as the UDRP, which at the moment, does not prohibit a complainant from filing after a set period.

One principle which has already proven to be valuable for brand owners, is the ability of a Panelist under the CNDRP, to take into account new acquisitions of domain names as fresh registrations, falling in line with the guidelines in WIPO Overview 3.0. Specifically guideline 3.9, which discusses a new acquisition of a domain name in relation to Policy Paragraph 4(a)(iii), relating to bad faith registration and use:

‘…the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith. This holds true for single domain name acquisitions as well as for portfolio acquisitions.’

Under the CNDRP, case law has arguably been the main authority when looking at issues relating to the two-year time bar. The case of Leister Brands AV v. Chen Qiuheng DCN-1500641 is a particularly useful case on this topic, where the Panelist discussed the significance of a domain acquisition being akin to a new registration, as it requires similar processes and procedures. Following the case of Leister, there have been several follow-up cases, including Safenames’ most recent decision; Bulgari S.p.A v. 徐东彦 Case No. DCN-1700789. In this decision, the Panel discussed, at length, the applicability of the Leister case as well as other supporting factors. Such discussions included the trend adopted by WIPO’s Overview and the need for consistency in CNDRP decisions, even though the CNDRP, by nature, does not conform to following case law as precedent in domain disputes.

Overall, we can begin to see how attitudes are changing in the CNDRP, meaning that complaining parties have more scope to file complaints, even if they exceed the two-year time bar. However, the issue remains that parties are barred from filing claims, even if there is a clear case of abuse in the registration or use of a domain name. This author, in particular, sympathises with a lot of brands who face egregious cases of cybersquatting, but due to the two-year bar, cannot proceed with a complaint.

Only time will tell, whether or not complaints under the CNDRP will give more leniency to these type of cases. For now, brand owners can take some solace, knowing that a claim is not written off forever if it has been registered for longer than two years. A suggestion for brand owners at this stage would be to monitor infringing domain names which exceed the time bar to see if the Registrant details change hands later on.

If you need advice on the two-year time bar, or domains involving the .CN extension, you can contact our Brand Protection department or your Account Manager for further information.

On October 18, 2017, Safenames successfully recovered the domain name of a local fostering company which had been held for ransom by a notorious cybersquatter.

The Respondent, who was later exposed as WESLEY PERKINS of Birmingham UK in a recent article published by the Telegraph, found Mr Perkins to be behind numerous aliases and fake offshore companies that had been used to buy up the domains of many established businesses including ROLEX and ExxonMobil.

Littleacornsforstering.com was one such domain, which was inadvertanetly lost by its original owners who operated a fostering agency from the website. After rejecting Mr Perkins attempts to blackmail the fostering agency in to a sale and exhausting all other means, Safenames were instructed to file a UDRP complaint with the World Intellectual Property Organization.

Micah Ogilvie
Head of Legal

Micah Ogilvie is head of legal at Safenames Limited and manages the IP department. He has advised both global enterprise clients and smaller e-commerce and internet companies on brand protection, domain name dispute proceedings and cases of trademark infringement on the Internet. He has represented companies in more than 100 disputes through various international arbitration bodies, including the World Intellectual Property Organisation, the Czech Arbitration Court and the Hong Kong International Arbitration Centre. Safenames is a leading global domain name registration company that specialises in corporate domain portfolio management and online brand protection services.

Safenames were able to succesfully establish the fostering company’s legal right to the domain, despite having no registered trademarks at the time of dispute and an abusive pattern of conduct on the part of Mr Perkins.

The Panel in the case further held:
“The Panel would also add that it is unfortunate that the business practices of Mr. Perkins appear to have carried on for the most part unchecked for many years, notwithstanding the multiple findings made against him in UDRP proceedings and the brazen nature of his conduct. Particularly, concerning is that Mr. Perkins seems intent on taking advantage of the fact that frequently it will make more commercial sense for a victim of his cybersquatting activities to pay him monies to retrieve the Domain Name than to incur the legal fees and the cost associated with proceedings under the Policy.”

It is important to note that the domain industry is primarily made up of respectable investors, however the panel’s decision does beg the question of whether more can be done by national laws to criminalise the activities of serial cybersquatters. Conservative MP and chairman of the digital, culture and sport select committee, Damian Collins, has called for an “urgent review” to combat this level of extortion and offer more protection for British businesses.

Although brand management presents many challenges for brand owners, Micah Ogilvie, who is head of legal services at Safenames, believes brands can do more to protect themselves from unscrupulous domain investors who prey on their intellectual property.

“Although advertising budgets are often regarded as a necessity to help build a brands reputation, maintaining that reputation through a brand protection strategy is often overlooked. Budgets for brand protection are often minimal or non-existent and many brand owners adopt a reactive approach.

Brands need to understand that when it comes to protecting their most important assets, cheap is not always better. The cheapest domain registrars are not always the most secure, what is of more importantance is being able to pick up the phone and discuss any issues with a designated account manager that understands your portfolio and can notify and advise you appropriately. When a brand owners consolidate there domains into a single portfolio, this makes it easier for them to manage”

Protecting brands and marks online has been a complicated process since the introduction of new gTLDs. Fortunately, registries with large portfolios of TLDs, like Rightside, have begun offering the Domain Protected Marks List (DPML) service, to cover a mark on multiple domain extensions. Rightside’s own DPML covers all 40 of its TLDs, including highly relevant business verticals and concentrations, from .MORTGAGE and .SOFTWARE, to .SALE and .SOCIAL. This past April, Rightside launched an upgrade of DPML that has made the service more valuable than ever.

When DPML was first offered, it covered rightsholders’ exact-match trademark as recognized by the TMCH. Since then, domain squatters have begun taking advantage of the exact-match limitation by slightly altering trademarks in the names they register. To combat this, Rightside’s upgraded DPML offers subscribers the ability to create up to ten Variants of their mark that are covered by the same list. With the trademark and ten variants secured under all 40 new TLDs, each DPML subscription can protect up to 440 domain names.

In addition to Variants, DPML covers all domains in a list in over 200 supported IDN languages, and now includes coverage for Premium-tier domain names, as well. With such a broad blanket of protection, Rightside’s DPML now offers one of the most powerful tools for modern mark holders in a single, easy-to-manage package.

While DPML has made brand protection much easier, it now enables rightsholders to pivot from protection to true brand enhancement. With the upgraded DPML service, it is now possible to activate any domain protected in a list with no additional activation cost. This new feature is a very valuable option for any brand’s marketing or sales team. An activated domain can quickly be employed for a landing page, a campaign, or a Branded Short Link, and represents a real opportunity to generate value with domains that may have otherwise sat unused forever.

Whether the priority is protection or enhancement, DPML—especially in its new and improved form—gives mark holders added flexibility and confidence to tackle both current and future obstacles to successfully managing a trademark.

For more information or to purchase please reach out to your Safenames representative today or visit our DPML Page

The Uniform Domain Name Dispute Resolution Policy (UDRP), which came into force in 1999, is still the preferred route for domain name dispute resolution. This
inexpensive and expedited procedure permits parties to seek the transfer or cancellation of domain names which are not only identical or confusingly similar to a trademark, but which have been registered and used in bad faith.

The World Intellectual Property Organisation (WIPO), which administers UDRP proceedings, states that it has processed more than 30,000 cases since its inception, encompassing over 58,000
domain names. In 2015 alone WIPO administered 2,754 cases – a 5% increase on the previous year, which was partially triggered by the emergence of new generic top-level domains (gTLDs) in 2013.

Micah Ogilvie
Head of Legal

Micah Ogilvie is head of legal at Safenames Limited and manages the IP department. He has advised both global enterprise clients and smaller e-commerce and internet companies on brand protection, domain name dispute proceedings and cases of trademark infringement on the Internet. He has represented companies in more than 100 disputes through various international arbitration bodies, including the World Intellectual Property Organisation, the Czech Arbitration Court and the Hong Kong International Arbitration Centre. Safenames is a leading global domain name registration company that specialises in corporate domain portfolio management and online brand protection services.

There is no doubt that the UDRP offers many benefits to trademark owners, with owners prevailing in approximately 90% of all cases; but does it go far enough in addressing the ever-pressing issue of cybersquatting? Is there a need for a complete overhaul of the UDRP or can we rely on the current consensus that has been established over the years? This chapter addresses some of these questions, examines alternative rights protection mechanisms and considers whether lessons can be learned from other self-administered dispute providers.

Alternative rights protection mechanisms
The UDRP was designed to tackle the unique circumstances resulting from a rapidly growing domain name system, while focusing on a narrow class of cases: clear cases of abusive registration and use.

With the launch of new gTLDs in 2013, the Uniform Rapid Suspension (URS) procedure was introduced in order to provide rapid relief to rights holders for clear-cut cases
of infringement. The mechanism, which is administered by the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre, promised a lower cost ($375) and a faster resolution for trademark owners who could prove their cases with clear and convincing evidence. However, the URS was not designed to replace the UDRP, but rather to complement it by allowing rights holders to suspend the offending domain name for the remainder of the registration period, rather than seeking transfer of the domain.

The URS has better benefits than the UDRP when dealing with the most egregious forms of trademark infringement (eg, the online sale of counterfeit goods). Further, in such cases an affected rights holder will want the issue resolved quickly, so the URS – which can resolve issues quickly (within 12 to 18 days) – may be the more viable option. Moreover, the URS remedy of suspension rather than transfer or cancellation may be a better alternative for rights holders which are wrestling with the expense of ever-increasing domain portfolios. Although cancellation requests under the UDRP have seen a slight increase over the years, this has never been a popular remedy among rights holders, as it risks the domain name falling back into the wrong hands once it is released for general registration. On the other hand, suspension, which applies only to new gTLDs, allows rights holders to balance the cost between enforcement and monitoring. Trademark owners can limit the recovery of domain names which are desirable through the UDRP while using the cost-effective URS mechanism to suspend and monitor less
desirable domain names.

Only time will tell whether the URS is a valuable mechanism for rights holders. At present, many still question whether it complements the UDRP. WIPO, which has not implemented the URS, has called it “relatively overburdened”, suggesting that the process is trying to do “too much for too little”. This raises the question of whether the UDRP itself could be adjusted to meet the demands of the expanding domain name system.

Can lessons be learned from self administered dispute providers?
Although many countries which provide alternative dispute resolution services have adopted the UDRP, some administer their own policies. One example is the award winning UK Dispute Resolution Service (DRS) administered by NOMINET, the UK internet registry that operates the ‘.uk’ extension.

The DRS not only allows for the informal mediation of a dispute before the appointment of an expert panel, but has also implemented a default-based model, allowing complainants to request a summary decision at a reduced cost in the absence of a filed response. The summary decision is composed of a simple tick box process to confirm whether the complainant has successfully established its case.

NOMINET’s stats reveal that of the 728 cases filed in 2015, 169 were summary decisions.

The lack of written analysis of procedural matters, party contentions and findings addresses WIPO’s initial concerns regarding the URS, whereby expert lawyers – many of whom work in law firms – must review complaints and provide comprehensive decisions for a relatively small fee.

A large number of UDRP cases go undefended. According to the NAF, of the 1,836 cases filed with it in 2014, the respondent failed to submit a formal response in 56.9% of cases. Therefore, rights holders which file large numbers of complaints would undoubtedly benefit from such a model.

Call for mediation
The call for online mediation as part of the UDRP process is seen as a commercially sensible solution for both parties. The statistics of dispute resolution providers which provide informal mediation as part of their procedures demonstrate that online UDRP mediation should be given serious consideration. Again, NOMINET offers a period of informal mediation after the parties’ submissions have been made under the DRS. In 2014, of the 728 cases filed under the DRS, 160 were settled through mediation. This reduced the length of time that it took to manage the disputes by an average of 44 days, as the amount of complaints which proceeded to the appointment of an expert decreased.

The free mediation process is confidential and conducted on a without-prejudice basis with the assistance of a trained mediator, allowing the parties to explore all options freely and even to reason on the strengths and weaknesses of each other’s cases.

With the limited remedies and narrow class of cases which fall under the UDRP, mediation could also allow for the sort of relief that would not normally be available, such as the resolution of domain name disputes involving parties with existing or past business relationships.

Multiple complainant class complaints UDRP cases such as those involving infamous registrant Yoyo Email Limited illustrate the need for multiple complainant disputes. To date Yoyo, which attracted controversy over the registration of more than 4,000 domain names comprising thirdparty trademarks together with the ‘.email’ gTLD, has been involved in over 50 UDRP and URS cases, with all but one URS case being decided in favour of the complainant. In all cases the alleged abuse and conduct of the respondent were the same; in this type of case, where rights holders have a common grievance against a particular respondent, an express provision for consolidated complaints would be highly beneficial.

The existing UDRP rules make no express provision for multiple complainants to bring proceedings under a single complaint, although for some time UDRP case law has provided principles governing the question of multiple complainant disputes. However, regarding proceedings brought in the Czech Arbitration Court (CAC), Article 4 of the CAC’s UDRP Supplemental Rules expressly provides for proceedings to be brought by multiple complainants. Article 4 designates such proceedings as a class complaint, provided that:

the class complaint is based on legal arguments applicable equally, or substantially in the same manner, to all the disputed domain names;

the person representing several different complainants joined in the class complaint is authorised to act on behalf of each of the complainants; and

the panel orders the transfer of any disputed domain name only to the individual complainant on whose behalf such transfer was requested in the class complaint.

Complainants have repeatedly shown that they are willing to unite their resources and efforts to tackle the issue of cybersquatting (see Fulham Football Club (1987) Limited v Domains by Proxy, Inc, WIPO Case D2009-0331). Giving rights holders the ability to file or join class complaints where the respondent has engaged in common conduct which affected their trademark rights could lead to the more streamlined version of the UDRP for which many trademark owners have called.

Revisiting the UDRP’s conjunctive requirement – ‘and’ or ‘or’?

The UDRP’s conjunctive requirement of demonstrating both bad-faith registration and bad-faith use has been the subject of debate for many years among panellists. Where the majority have interpreted this element of the policy as having two requirements, further limiting the UDRP’s already narrow scope, a number of panellists believe this interpretation to be incompatible with the UDRP objective of tackling cybersquatting.

Cases such as Guru Denim Inc v Abu-Harb (Case D2013-1324, ‘truereligion.com’) highlight the split rules for this element of the policy and provide some justification for adopting a non-conjunctive interpretation.

In Guru Denim Inc the complainant filed against the respondent for the domain name ‘truereligion.com’. The respondent registered the domain in 1998 to promote Islam, four years before the complainant created its True Religion brand.

In 2009 the site began receiving over 1,000 hits a day due to the popularity of the complainant’s True Religion brand, prompting the respondent to take unfair advantage and monetise the traffic through Google’s Adsense programme. It later emerged that the respondent had offered to sell the domain name for $380,000.

The majority panel held that while there could be evidence of bad-faith use in these circumstances, the complainant could not demonstrate that the domain name had been registered in bad faith as it had been acquired years before the brand came into existence. However, the dissenting panellist stated: “I defy any panellist to show me evidence from any portion of the legislative history or from any other provision of the Policy that would indicate that the drafts persons or the provisions of the Policy as drafted intended that a registrant could use a domain name to target a trademark and profit from its goodwill, so long as the time that the domain name was registered, the registrant had no intention of doing so.”

The case emphasises the limitations of the UDRP and the possible loopholes that can be exploited. Domain owners would argue that the conjunctive requirement offers a vital level of protection in an already biased process in favour of rights holders. On the other hand, rights holders might question whether changes to the bad-faith element would unfairly undermine a domain name owner’s interests. After all, a legitimate domain owner would usually be able to defend the legitimacy of its registration and use under the second element of the UDRP, which discusses rights and legitimate interests.

The majority of national dispute resolution procedures which provide their own variations of the UDRP (eg, Australia’s ‘.au’ Dispute Resolution Policy (aUDRP)) have abandoned a conjunctive requirement in favour of the either/or model – namely, that the respondent either registered or subsequently used the domain name in bad faith. The UK DRS Policy has gone one step further in addressing this controversial subject by instead adopting the term ‘abusive registration’. As defined in Paragraph 1 of the DRS, ‘abusive registration’ covers situations
where a domain name:

was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant’s rights; or

has been, or is likely to be, used in a manner which takes unfair advantage of or is unfairly detrimental to the complainant’s rights.

This language gives expert panels broad discretion as to what constitutes abuse and allows the complainant to show that the abuse occurred at any time during the life of the
domain name.This scope covers domains that are inherently abusive and is further emphasised in the DRS, which recognises and allows the presumption of abusive registration if the complainant proves that the respondent has been found to have made an abusive registration in three or more DRS cases in the two years before the complaint was filed, irrespective of how the domain name is being used. Although this does not result in the automatic loss of the domain name for the respondent, it weakens its position quite significantly.

Many have questioned the morality element of the DRS’s automatic assumption of guilt or the ‘three strikes’ rule. Nevertheless,
it places an ongoing responsibility on domain owners to ensure that their registrations areall legitimate and that, where possible, issues are settled before proceedings. A domain owner with a large portfolio of domain names is less likely to risk proceeding to a DRS where there is a high probability of losing if it knows that decision will count against it in the near future. The provision not only encourages communication between parties, but also attempts to provide a clear distinction between legitimate domain owners and cybersquatters by labelling those who continually show blatant disregard for the rights of trademark owners. The DRS has successfully provided an alternative approach to the much-debated bad-faith schools of thought. Rather than a conjunctive or disjunctive view, as debated under the UDRP, perhaps the DRS’s all-encompassing concept of abusive registration requirement better addresses the range of circumstances that arise in disputes.

Comment
As discussed here, rather than relying on the creation of new rights protection mechanisms, lessons can be learned from self-administered dispute providers. The adoption of a default model and a consolidated complaint provision may provide the type of streamlined process that the URS was intended to provide, without the complexity. Voluntary mediation could reduce costs and encourage broader types of resolution, while clear language to reflect an evolving domain name system may provide the consistency that the UDRP needs.

While it is safe to say that the UDRP is an imperfect administrative process which would benefit from some fine-tuning in certain areas, the volume of cases filed since its inception demonstrates that it is functioning as the drafters intended. The UDRP will remain in effect for the foreseeable future, but minor changes to the process could further improve its effectiveness as a protection mechanism for rights holders.